The Complainant is Eveready Battery Company, Inc., St. Louis, Missouri, United
States of America, represented by Thompson Coburn LLP, United States of America.
The Respondent is Web Master, Georgetown, Grand Cayman, United Kingdom of Great
Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <energiser.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration
and Mediation Center (the “Center”) on November 18, 2006. On November
22, 2006, the Center transmitted by email to eNom a request for registrar verification
in connection with the domain name(s) at issue. On November 23, 2006, eNom transmitted
by email to the Center its verification response confirming that the Respondent
is listed as the registrant and providing the contact details for the administrative,
billing, and technical contact. The Center verified that the Complaint satisfied
the formal requirements of the Uniform Domain Name Dispute Resolution Policy
(the “Policy”), the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform
Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally
notified the Respondent of the Complaint, and the proceedings commenced on November
29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response
was December 19, 2006. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on December 28, 2006.
The Center appointed Knud Wallberg as the sole panelist in this matter on January
16, 2007. The Panel finds that it was properly constituted. The Panel has submitted
the Statement of Acceptance and Declaration of Impartiality and Independence,
as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is one of the world’s largest
manufacturers of dry cell batteries and flashlights. Since at least as early
as 1955, the Complainant has continuously used the ENERGIZER mark in connection
with its batteries and other related goods.
The Complainants products are marketed and sold in more than 150 countries
around the world, just as the Complainant holds several registrations of the
trademark ENERGIZER in the United States of America and elsewhere.
Complainant also maintains an active presence on the Internet, primarily through
its website “www.energizer.com”, but Complainant and its related
companies also own other domain names that contain the term ENERGIZER, including
<energizerbatteries.com> and <energizerbunny.com>.
5. Parties’ Contentions
A. Complainant
The domain name is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights
The Complainant contends that the contested domain name <energiser.com>
is virtually identical and thus confusingly similar to Complainant’s ENERGIZER
marks. Respondent has merely changed the letter “z” to the letter
“s.” UDRP panels have repeatedly held that typosquatted domain names
such as this are confusingly similar for the purposes of Section 4(a)(i) of
the Policy. .
Also, the “www.energiser.com” website provides links to various
websites that offer batteries other than those of Complainant, including a link
to a website that sells “Duracell” batteries, which are made by
one of Complainant’s largest competitors, and links to other websites
that likewise promote the products of Complainant’s competitors. This
fact also weighs in favor of a finding that the <energiser.com> domain
name is confusingly similar to Complainant’s mark.
In view of the foregoing, Complainant submits that Respondent’s domain
name is identical or confusingly similar to trademarks in which it has rights
as required under the Policy para 4(a)(i).
The Respondent has no rights or legitimate interests in respect of
the domain name
Respondent has no rights or legitimate interests in the domain name <energiser.com>.
The domain name energiser.com was first registered on July 11, 2004, approximately
50 years subsequent to when Complainant first used its ENERGIZER mark in connection
with batteries.
Complainant states that Respondent is not a licensee of Complainant and has
never been affiliated with, connected to, or sponsored or endorsed by Complainant.
Additionally, because Respondent is using a domain name that is identical or
confusingly similar to Complainant’s mark, and is doing nothing more than
offering sponsored links - many of which redirect visitors to websites selling
batteries and related products of Complainant’s competitors - Respondent
is not using the domain name in connection with a bona fide offering of goods
or services.
Additionally, the Whois record fails to establish that Respondent is one commonly
known by the name <energiser.com>, and a search of the current U.S. Patent
and Trademark Office records reveal no applications or registrations for marks
incorporating the term “Energiser” in the name of Respondent.
Under such circumstances, it is inconceivable that the Respondent has any rights
or legitimate interests in the energiser.com domain name. Rather, it is only
reasonable to presume that Respondent’s only interest in using the <energiser.com>
domain name is to trade off the goodwill of Complainant for its commercial benefit,
as it has done in at least 5 other instances.
Complainant submits that Respondent has no rights or legitimate interest in
the <energiser.com> domain name as required under paragraph 4(a)(ii) of
the Policy.
The domain name was registered and is being used in bad faith
Complainant submits that paragraph 4(b) of the Policy provides four nonexclusive
circumstances that provide evidence of bad faith registration and use of a domain
name, including evidence that (i) Respondent registered the domain name to prevent
the owner of the relevant trademark from doing so, provided that Respondent
has engaged in a history of doing so, (ii) the domain name was registered primarily
for the purpose of disrupting the business of a competitor, or (iii) Respondent
intentionally attempted to attract Internet users to the Respondent’s
website or other on-line location for commercial gain by creating a likelihood
of confusion.
In this case the Respondent has registered the domain name in order to prevent
Complainant from doing so, as evidenced by Respondent’s prior pattern
of such conduct. Complainant is aware of numerous UDRP decisions that appear
(based on the available registrant information) to involve Respondent, although
the Respondent in some of these cases is not identified specifically as “Web
Master,” the Complainant suspects that Respondent has registered the disputed
domain names in these cases under different names, in view of the fact that
the addresses provided by the Respondent in each case appears to be the same
as the address of the Respondent in the present case. This history of registering
domain names confusingly similar to the trademarks of others clearly evidences
Respondent’s bad faith use and registration of the disputed domain name.
The present circumstances also clearly indicate that the <energiser.com>
domain name was registered primarily for the purpose of disrupting the business
of Complainant. Respondent is competing with Complainant by providing “sponsored
results” that link to websites selling the products of Complainant’s
competitors. Evidence that a registrant uses a domain name in this manner supports
a finding that its use of the disputed domain name is in bad faith.
Additionally, the Respondent has registered the domain name <energiser.com>
to intentionally attract Internet users to its website by creating a likelihood
of confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s website. Given the fame
and notoriety of the ENERGIZER trademark, it is inconceivable that the Respondent
registered the energiser.com domain name in good faith and without knowledge
of the Complainant’s ENERGIZER mark, particularly in view of the fact
that the associated website provides links to sites selling “Eveready”
products.
According to the Complainant there is no doubt that Respondent was aware of
Complainant’s rights at the time it renewed the <energiser.com>
domain name registration in July 2006. Complainant first contacted Respondent
regarding its use of the domain name in April 2006, explaining its rights in
the ENERGIZER mark, and asking that the Respondent transfer the domain name
to the Complainant. The Complainant specifically requested that the Respondent
respond no later than April 14, 2006. As of June 2006, Complainant had not received
a response, so it sent a second letter to Respondent, noting that the energiser.com
domain name was due for renewal on July 11, 2006, and indicating that any renewal
of the domain name would constitute willful infringement. The Complainant has
not received a response to this letter. The Respondent subsequently renewed
the domain name and continued to display “Sponsored Results” until
July 2006, at which time all references to batteries were removed. The Complainant
continued to monitor the site and, in October 2006, learned that Respondent
had again changed the site, to contain battery-related “Sponsored Results.”
These facts indicate that the Respondent was aware of Complainant’s rights
in the ENERGIZER mark as of the time that it renewed its registration and then
posted battery-related “Sponsored Results”.
Moreover, the Respondent has no trademark or service mark rights for the term
“Energizer” (or “Energiser”) and is not commonly known
by it. It appears that Respondent is attempting to attract members of the public
who have an interest in purchasing or obtaining additional information about
ENERGIZER batteries, and then offering them links to websites selling, among
other things, the batteries of Eveready’s competitors. The Respondent
presumably obtains a commercial benefit by providing “sponsored results”
on its site, as operators of websites of this type generally receive revenue
for each click-through by on-line consumers. It is recognized in other UDRP
decisions that such acts may “generate unjustified revenues for each click-through
by on-line consumers of the sponsored links,” and thus illegitimately
capitalize on the trademark owner’s fame. Use and registration of a domain
name for such purposes is misleading, and constitutes evidence of bad faith
registration and use of a domain name under the UDRP. The fact that the sponsored
links direct consumers to the websites of the trademark owner’s competitors,
it is a “strong indicator” of bad faith.
For all of these reasons, Complainant submits that Respondent’s registration
and use of the disputed domain name is in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint
in accordance with the Policy, the Rules and any rules and principles of law
that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of
the following:
(1) that the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
and
(2) that the Respondent has no rights or legitimate interests in respects of
the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these
elements are present lies with the Complainant. At the same time, in accordance
with paragraph 14(b) of the Rules, if a party, in the absence of exceptional
circumstances, does not comply with any provision of, or requirement under,
the Rules, or any request from the Panel, the Panel shall draw such inferences
there from as it considers appropriate.
A. Identical or Confusingly Similar
The contested domain name contains Complainant’s distinctive trademark
ENERGIZER, with the only difference that the “z” is substituted
with a “s” and with the addition of the “.com” designation.
For the purpose of these proceedings the domain name is found to be confusingly
similar to the Complainant’s trademark.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are
therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint the Complainant has not licensed or otherwise permitted
the Respondent to use its trademark or to apply for any domain name incorporating
the mark.
The Complainant has established a prima facie case that the Respondent has
no rights or legitimate interests in the domain name. The Respondent has not
rebutted this. Although the word ”energiser” may be a generic word
that is descriptive for some goods namely for energisers/energizers, Respondent
does thus not claim that the domain name is intended to be used for such goods.
Such a claim would also be contrary to the way the Respondent has been using
and is still using the contested domain name, namely for a website that links
to other sites that offer batteries including batteries offered by competitors
of the Complainant. The Panel further refers to its below findings in relation
to the actual use made of the domain name
Consequently the Panel finds that the conditions in paragraph 4(a)(ii), cf.
4(c) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must
prove the Respondent’s registration and use of the domain names in bad
faith. Paragraph 4(b) of the Policy sets out, by way of example, the kind of
evidence that may be put forward.
The Complainant’s trademark was registered and used well in advance of
the date of registration of the disputed domain name. Given the geographically
widespread use of the Complainant’s trademark and the distinctive nature
of the mark, it is inconceivable to the Panel in the circumstances that the
Respondent registered the domain name without prior knowledge of the Complainant
and the Complainant’s mark.
This is underlined by the fact that the disputed domain name is apparently
used for a website that links to other sites that offer products of the Complainant
and of competitors of the Complainant. The Panel therefore finds that the Respondent
by registering and using the domain name, intentionally created a likelihood
of confusion as to the source, sponsorship, affiliation or endorsement of the
domain name in dispute with the purpose of attracting Internet users to the
website for commercial gain. Under these circumstances it is not necessary for
the Panel to address the additional arguments presented by the Complainant in
support of Respondent’s bad faith.
Considering all the facts and evidence, the Panel therefore finds that the
requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this
case.
7. Decision
For all the foregoing reasons, in accordance with
paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the
domain name <energiser.com> be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: January 26, 2007
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